User-Affidavit

User-Affidavit

Introduction

In some cases, Brand Name Registration depends on earlier use or first claim and therefore, the applicant needs to attach the user affidavit along with the brand name application. A person who has applied for trademark in first place will be given specific priority in registration. The use of ‘User Affidavit’ plays a vital role in brand name registration and application.

What is User-Affidavit?

A Client/User Affidavit/Statement of Use is an official testimony, made by user that must be connected to a brand name registration application when previous claim is made. According to the Trademark Rules, 2017, the brand name user affidavit has been made compulsory attachment with all the trademark applications asserting prior use.

The owner signing the affidavit is called ‘deponent’ who announces that the information provided in the said affidavit is said to be accurate and true to the best of their knowledge and nothing has been misstated.

To claim priority, the candidate must give the user date and prove the same. According to the Indian Trademark Act, 1999 the online brand name application can be made by-

1. Claiming User Date;

2. As Proposed to be Utilized;

If user date is claimed, the candidate must provide the verification of use on the said date.

In the case of M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited,¹ the Delhi High Court held legal principle of Prior User of a Mark. The Court observed that prior user of trademark will overrule the subsequent user even if the subsequent user registered the brand name.

Further, In the case of Sabu Trade Private Limited vs Sh. Rajkumar², the Delhi High Court observed that registration of trademark is prima facie evidence in favour of holder of such mark; however, Section 34 is an exception to given section. Section 34 implies that owner of a registered brand name cannot restrain the use of a similar trade mark by any person for goods which that person has continuously used the mark from a date prior to the use of the registered proprietor.

User Date in Affidavit

Since, the prior user has more significance than a registered mark. This is said to be the date which suggests the date of first utilization of the brand name by the owner which is included in the affidavit. The brand name candidate needs to incorporate the commercial transaction receipts in such cases.

Date of first utilization of brand name must be referenced on all brand name application. It is the date when the goods were first sold or shipped, or the services were first delivered. In case, if the mark was never used, at that point date of first use can be "Proposed to be utilized", and in this user affidavit or brand name statement of use need not be needed. In case a date of usage is mentioned in the application, then user affidavit must be attached with the brand name application.

Content of User Affidavit

According to the Trademark Rules, 2017 the affidavit along with application should contain certain documents.

• Name of the Trademark- The mark which is to be registered and should be mentioned in an application with its description;

• Class of the Mark- It is where goods being sold and services delivered and where Trademark be registered by user;

• Details of the Owner- It includes, name, address, contact, nationality of the said owner;

• Date of First Use- It is the date when goods were sold or services were delivered first under the mark.

Documents in support of Prior Use

The documents include records that contain the brand name and the date, which has public circulation or demonstrates the business utilization of the brand name, which can be adopted as proof. For example- sales invoices, purchase orders, or statement of accounts, which define the usage of the mark for goods or services. Also, press coverage, photos at trade fairs, awards and accolades etc. can be filed.

Following documents must be filed with the brand name application to claim the user date-

1. Invoices and Bills- It includes bills for expenses like purchasing raw materials, bills for brochures & banners, invoice issued to consumer etc.

2. User Affidavit – A compulsory document for online trademark registration.

3. Government Registration Certificates – The Government of India/State/Other Authority issues registration certificate to the application.

4. Online presence – Any registration certificate obtained for domain received, snap shots of Post, images of promotions social media platforms, website pages that promote the service etc. can be presented.

5. Publication to the public at large – Any kind of advertisements, declarations, brochures, flyers distributed to public, announcements, to newspaper or other public platform.

6. Radio Advertisements and Television Commercials;

Importance of claiming Prior Use Date

In the case of S. Syed Mohideen Versus P. Sulochana Bai³, the Madras High Court observed that rights granted by registration are exposed to the rights of the earlier client of the brand name. Also, where rights of earlier client are perceived superior than that of the registration and even the registered owner can't disturb or interfere with the rights of prior use.

Then, In the case of Amaravathi Enterprises v. Karaikudi Chettinadu,⁴ the Madras High Court held that to set up a protection of prior use under Section 34 must prove the volume. When a defence of prior use is taken the burden lies on the trader or producer who raises it to prove the non-stop utilization of the trademark.

Similarly, In Veerumal Praveen Kumar v. Needle Industries (India) Pvt. Ltd,⁵ the Delhi High Court held that defendant must establish that according to specific products there is a course of trading and that a goodwill connecting the trader with the goods by reason of the trade mark under which the goods are marketed has resulted.

Further, In the case of Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill Enterprises,⁶ held that mere advertisements in a newspaper can not constitute proof of a use of a mark from that date. Similarly, the grant of a telegraphic address, or soliciting of business, or the receipt of trade inquiries do not satisfy the legal requirement of the defendant to show that it used the marks earlier than the Plaintiff did, with regards to goods for the purpose of Section 34.

Conclusion

For filing of Trademark Application, user date plays a significant role because claiming user date is necessary and applicant will not get the benefit in case of failure. The goodwill created over the years should not be given up rather the claim of user date should be made by submitting proper prior use proofs and documents and affidavits.

BY:-

ANKITA MISHRA